No.168 July 28, 2020 |
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| Unitalen News |
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In this issue
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 SPC: Similar Case Search Regulations and System in Trial Effective from July 31
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On July 27, 2020, the Supreme People’s Court issued the " Guiding Opinions on Unifying the Application of Laws to Strengthen Retrieval of Similar Cases (Trial)" (hereinafter referred to as the "Opinions"), with the newly released search system for similar cases, to serve the purpose of unifying the application of law so as to achieve "similarity” in judgments over similar cases and “difference” in judgments over different cases.
In fact, as early as November 2010, the Supreme People’s Court had issued the "Provisions on Case Guidance", which required the courts at all levels to make judgement on the basis of reference to the guiding cases. With the rapid development of the Internet in China, search tools and data available nowadays are sufficient to support the needs of search work, so a search system for similar cases is born.
The Opinions has specified the main body of search as the "responsible judges", and it has defined the types of cases for mandatory search; the scope, platform, method, and order of similar cases search; the degree of responsibility and the work objectives of the responsible judges; as well as laid out the requirements concerning the preparation, content and evaluation criteria of the retrieved cases reports, and the development of technology and databases to facilitate the system.
It’s noteworthy that the Opinions also requires the People’s Courts, if there are inconsistencies in the application of laws in a retrieved similar case, to resolve difference on the basis of reference to the “Implementation Measures of the Supreme People’s Court for Establishing the Mechanism for Resolving Difference in the Application of Laws”.
The complete provisions of the Opinions in Chinese can be read here: http://www.court.gov.cn/fabu-xiangqing-243981.html
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| State Council: New Target for Trademark Registration Efficiency Improvement
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Recently, the General Office of the State Council of China issued the “Implementation Opinions on Further Optimizing the Business Environment and Better Serving Market Entities”, Article 16 of which has mentioned the new targets for further improvement in trademark examination efficiency:
“(16) Further improve the efficiency of trademark registration. Increase the data update frequency of the trademark online system, improve the system's AI search functions and promote the automatic comparison of graphic trademarks online. Further reduce the review period for trademark opposition and refusal; and provide timely feedback on review results. The average examination period for trademark registration will be reduced to less than 4 months by the end of 2020. (This is responsible by the State Intellectual Property Office)”
(Source: www.gov.cn)
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| EU Approved Signing of the China-EU GI Agreement after Eight Year Long Negotiation
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The Council of the European Union made a decision on July, authorizing the signing of the China-EU Geographical Indications (GI) Agreement.
According to the EU announcement, the agreement is the first significant bilateral trade agreement signed between the EU and China. It will ensure that 100 GIs from both the EU and China are protected in each other’s markets, thereby ensuring mutual respect for each other’s agricultural traditions. The announcement stated that four years after the agreement entered into force, the scope of the agreement will be expanded to cover an additional 175 GI marks from both sides.
The negotiations on the China-EU GI Agreement began in 2011 and lasted 8 years. On November 6, 2019, Chinese Minister of Commerce Zhong Shan and EU Commissioner for Agriculture Phil Hogan jointly announced the conclusion of the negotiations on the China-EU GI Protection and Cooperation Agreement.
(Source: CNIPA website)
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| Cases in Spotlight
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| Unitalen Client JBC Won the Trademark Infringement and Unfair Competition Litigation of First Instance
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Background：
Unitalen client JBC, originating from Spain, is an internationally renowned brand of welding tools, with a history dating back to 1929. JBC Company has registered the No. 8606223 "JBC" trademark in China, and the approved designated products are Class 9 electric soldering guns, electric welding equipment, electric soldering irons, etc. The trademark involved in the case has accumulated a high publicity and reputation among the relevant public in China.
The defendant Shenzhen Nuohao Technology Co., Ltd. was established in 2012, and its main business scope overlapped with JBC. The defendant claimed on its official website that JBC was a "partner client" and sold the so-called “domestic JBC soldering tips” products, which are produced by itself, through e-commerce platforms such as Alibaba www.1688.com website and made profits from it.
Court Ruling：
After the trial, the court of first instance ruled that the defendant had infringed on JBC trademark and constituted unfair competition through false propaganda. The dependent is ordered to compensate the plaintiff’s rights protection costs of 100,000 yuan and the economic loss of 350,000 yuan, including 300,000 yuan for the economic losses from trademark infringement and 50,000 yuan for the economic losses from false propaganda.
Unitalen Comments：
The difficulty in this case is that the defendant sold the counterfeit JBC products produced by itself and the genuine JBC products together; and pretended to be a JBC distributor in business activities. It’s very likely for the defendant to use the provisions in Paragraph 2 Article 64 of the Trademark Law concerning “legitimate source” to avoid the liability for compensation. Therefore, how to effectively negate the defendant’s lawful source defense and restore the truth has become the focus of the case. Unitalen litigation team obtained sufficient rebuttal evidence in advance and successfully denied the defendant’s claim of a legitimate source at the court, which led to winning the case.
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| Unitalen Client BCS Group Won the Patent Infringement Litigation with the Supreme People’s Court – Whether “Estoppel” Applicable to a Modification Made during Patent Substantive Examination?
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Background：
The plaintiff and patentee, BCS Group (Italy), submitted an invention patent application titled "Agricultural Drives and Related Tools" (hereinafter referred to as “the patent involved”) to the State Intellectual Property Office of China on March 30, 2010, which was granted on September 9, 2015.
The defendant, Yongkang Hongyue, manufactures and sells a “Snow Blower” product of "Hongyue 740" model, which used the patent involved without the permission of the plaintiff and thus infringed the patent right involved.
Entrusted by BCS Group, Unitalen filed a patent infringement lawsuit with the Hangzhou Intermediate Court in 2018. The Hangzhou Intermediate Court ruled in July 2019 that Yongkang Hongyue should immediately stop the infringement and compensate BCS for economic losses. In refusal to accept the judgment of the first instance, the defendant appealed to the Supreme People’s Court.
Court Ruling：
After the trail, the IP division of the Supreme People’s Court found that Yongkang Hongyue's appeal was not valid, so the ruling of the first instance shall be upheld. Thus BCS Group won the ultimate victory in this patent infringement case against Yongkang Hongyue.
Typical Significance：
The focal dispute in this case is: under what circumstances will BCS’ modification to the claims and statement of opinions in the patent examination process constitute “estoppel”?
During the substantive examination of the patent involved, the examiner rejected the novelty of the additional feature "approximately inclined by 45°" in the original claim 5 and 10 in the first examination opinion. In reply to the first examination opinion , BCS merged all the additional features in the original claim 2-5 and 7-10 and some of the features in the specification into claim 1 and 6, respectively; thus finally obtained the authorization.
First of all, it is necessary to determine whether the above-mentioned modification made by BCS constitutes the abandonment of the "approximately inclined by 45°" technical solution and other similar solutions. In the above-mentioned reply, BCS did not conduct a comparative analysis of the feature "approximately inclined by 45°", did not specifically state the difference between this feature and the prior art, nor did BCS point out the possible technical effects of the difference in angle; also, the distinguishing features and technical effects pointed out by BCS have nothing to do with the above-mentioned angle features, so the above-mentioned modifications do not lead to the legal effect of abandoning the technical solution.
Therefore, the defendant’s claim that "the angle of its products is greater than 60 degrees, and the constrictive modification made by BCS has led to the abandonment of other equivalent solutions to the 45-degree angle technical solution, the estoppel principle should be applied" cannot be established.
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| Unitalen News
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| SIPO Announced the 21ST China Patent Awards and 34 Patents Represented by Unitalen Found Among
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On July 14, the State Intellectual Property Office announced the 21st China Patent Award winners. More than 2,400 patents had participated the competition, among which, 30 inventions and utility model patents won the China Patent Gold Award, 10 industrial design patents won the China Industrial Design Gold Award; 58 invention and utility model patents won the China Patent Silver Award, 15 industrial design patent won the China Industrial Design Silver Award; 696 invention and utility model patents won the China Patent Excellence Award, and 60 industrial design patent won the China Industrial Design Excellence Award.
34 patents represented by Unitalen won the above-mentioned awards, including 7 China Patent Silver Awards, 26 China Patent Excellence Awards, and 1 China Industrial Design Excellence Award.
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| Unitalen Co-hosted the "Madrid System Practice Training Course Involving IP Litigation and International Protection" in Chengdu
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On July 8, sponsored by Chengdu Patent Office of the SIPO, Chengdu High-tech Zone Science and Technology and Talents Office, co-hosted by Chengdu High-tech Zone IP Service Alliance and Unitalen, the "Madrid System Practice Training Course Involving IP Litigation and International Protection" was successfully held in Chengdu High-tech Zone. The training focused on hot issues such as special protection of well-known trademarks, introduction of foreign-related trademark in Madrid and the other Trademark registration systems, aiming to help businesses understand domestic and international trademark determination, IP litigation and other practices, and improve the corporate IP protection system. More than 70 well-known companies in Chengdu High-tech Zone participated in the training.
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